TotalEnergies SE v Ben Adams

WIPO Case No. D2024-4182

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

TotalEnergies SE v. Ben Adams

Case No. D2024-4182

1. The Parties

1.1	The Complainant is TotalEnergies SE, France, represented by In Concreto, France.
1.2	The Respondent is Ben Adams, South Africa.

2. The Domain Name and Registrar

2.1 The disputed domain name <totalenergieservices.com> (the “Domain Name”) is registered with

Network Solutions, LLC (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2024. At that time publicly available WhoIs details did not identify the registrant of the Domain Name.

3.2 On October 11, 2024, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the Domain Name. Also on October 11, 2024, the Registrar transmitted by
email to the Center its verification response disclosing the underlying registrant details in respect of the

Domain Name.

3.3 The Center sent an email to the Complainant on October 14, 2024, providing the registrant and

contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the

Complaint. The Complainant filed an amended Complaint on October 24, 2024.

3.4 The Center verified that the Complaint together with the amended Complaint satisfied the formal

requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

3.5 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the

Complaint, and the proceedings commenced on October 25, 2024. In accordance with the Rules, paragraph
5, the due date for Response was November 14, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on November 18, 2024.

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3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 20, 2024.

The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

4.1 The Complainant, is a company incorporated in France on March 28, 1924. Initially, it used the name

“Compagnie Française des Pétroles”. It first adopted the term “Total” as part of its name on June 21, 1985,
and adopted its present name “TotalEnergies SE” on May 28, 2021.

4.2 The Complainant is a well-known energy company that operates globally in the fields of oil and

biofuels, natural gas and green gases, renewables, and electricity. It is, for example, the second largest LNG (Liquefied Natural Gas) player in the world. Companies in the Complainant’s group operate in 130 countries, including in the United States of America and in China.

4.3 The Complainant is the owner of numerous registered trade marks around the world that comprise or incorporate the terms “Total” or “Total Energies”. They include:

(i)        French registered trade mark No. 1540708 for TOTAL as a word mark filed on December 5, 1988, in

classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 13, 14, 15, 16, 17, 18, 19, 20, 21, 28, 29, 30, 31, 32, 33, and 34;

(ii) European Union registered trade mark No. 018308753 for TOTAL ENERGIES as a word mark filed on

September 17, 2020, and registered on May 28, 2021 in classes 1, 2, 3, 4, 5, 6, 7, 9, 11, 14, 16, 17, 18, 19,
20, 21, 25, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43, and 45;

(iii) International trade mark No. 1601110 registered on February 9, 2021, in classes 1, 4, 7, 9, 37, 39, and

40 and which has proceeded to grant to at least some degree in over 70 countries or territories and which
takes the following form:

(iv) International trade mark No. 1601092 registered on May 18, 2021, in classes 1, 2, 3, 4, 5, 6, 7, 9, 11,

12, 14, 16, 17, 18, 19, 20, 21, 25, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43, and 45 and which has proceeded to
grant to at least some degree in over 80 countries or territories and which takes the following form:

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within the Complainant’s group. The email was clearly sent as part of a fraudulent scheme and was
designed to deceive the recipient into believing that it had been sent by the Complainant when it was not.

4.6 It is doubtful given the way in which the Domain Name has been used that the name provided for the Respondent is the name of a real person who controls the Domain Name. However, “Ben Adams” was also the name used by the respondent in earlier UDRP proceedings brought by the Complainant; i.e.

TotalEnergies SE v. greenland greenland, Mark Holly, Sharon Mohale, David Hahn, Richard Carter, Ben Ben
Adams, WIPO Case No. D2022-3959. Those proceedings also involved the sending of emails in which the

Complainant was impersonated in furtherance of fraudulent activity.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that it has satisfied each of the elements required under the Policy for a

transfer of the Domain Name.

5.2 Notably, the Complainant contends that its registered trade marks are recognisable in the Domain
Name and that the Domain Name is therefore confusingly similar to its marks. It further contends that the
Respondent has no right or legitimate interest in the Domain Name, and that the fraudulent use of the

Domain Name demonstrates that the Domain Name has been both registered and used in bad faith.

B. Respondent

5.3 The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

6.1 It is generally accepted that the first element functions primarily as a standing requirement. The

standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward
comparison between the Complainant’s trade mark and the Domain Name. WIPO Overview of WIPO Panel
Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

6.2 The Panel finds the Complainant has shown rights in registered trade marks for TOTALENERGIES as well as trade marks in respect of which that term is a significant part. WIPO Overview 3.0, section 1.2.1.

6.3 The Panel also accepts that the Domain Name can only be sensibly understood as the term

“totalenergies” in combination with the word “services”, and the “.com” generic Top-Level Domain (“gTLD”), albeit with the one “s” missing. The missing “s” is likely to go unnoticed by many persons that encounter the Domain Name. The Panel is also satisfied, given the use that has been made of the Domain Name, that the Respondent has registered and used the Domain Name in the hope and expectation that it would not be so noticed.

6.4 Accordingly, the entirety of the Complainant’s mark is clearly reproduced in its entirely and is

recognisable within the Domain Name and the Panel accepts that the Domain Name is confusingly similar to

the Complainant’s mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.9.

6.5 Although the addition of other terms (in this case “services”) may bear on assessment of the second

and third elements, the Panel finds the addition of such term does not prevent a finding of confusing
similarity between the Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0,
section 1.8.

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6.6 The Panel, therefore, finds the first element of the Policy has been established.

B. Rights or Legitimate Interests, and Registered and Used in Bad Faith

6.7 It is usual for panels under the Policy to consider the issues of rights or legitimate interests, and

registration and use in bad faith in turn. However, in this case it is more convenient to consider those issues

together. WIPO Overview 3.0, section 2.15.

6.8 The Domain Name can only sensibly be understood as a reference to the Complainant’s TOTAL

ENERGIES marks combined with the word “services” and, therefore, inherently impersonates the Complainant. It is also clear that the Domain Name has been deliberately registered in order to falsely impersonate in emails the Complainant and its employees, in furtherance of a fraud directed to the recipients of those emails.

6.9 There is obviously no right or legitimate interest in holding a domain name for the purpose of

WIPO Overview 3.0

furtherance of a fraud through impersonation (see section 2.13 of the ), and the fact that registration and use of a domain name.

a domain name is or has been used for such a purpose is evidence that no such right or legitimate interest
exists. Further, the registration and use of a domain name for such a purpose involves registration and use
in bad faith (see section 3.4 of the WIPO Overview 3.0). Where, as here, the way that the domain name is
being used to further that fraud is as part of an email address, such activities also arguably fall with the
scope of the example circumstances evidencing bad faith registration set out in paragraph 4(b)(iv) of the

6.10 In the circumstances, the Panel finds that the second and third elements of the Policy have been

established.

7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the

Panel orders that the Domain Name <totalenergieservices.com> be transferred to the Complainant.

/Matthew S. Harris/
Matthew S. Harris
Sole Panelist
Date: November 27, 2024

4.4 The Complainant operates a number of websites promoting its business and activities, the main one of

which uses the domain name <totalenergies.com>. It also holds a large portfolio of domain names that
contain the terms “total” or “total energies”, including <totalenergies.group>, <totalenergies.fr>, and

<total.com>, which all resolve to the main websites of the Complainant.

4.5 The Domain Name was registered on March 7, 2024. It does not appear to have been used for any

active website. However, it has been used as part of an email address in at least one email sent in July
2024, that purported to come from “Partick Ceasar” who declared himself to be the “Procurement Director” of
the Complainant and which invited the recipient to tender to supply the Complainant with certain products.
The email also used the Complainant’s name and registered logo, and the physical address of a company